Souza et al v. Charmed LLC
Filing
30
MEMORANDUM OPINION AND ORDER denying 27 Motion for Partial Summary Judgment. Defendants' 7 affirmative defenses of fair use, nominative fair use and descriptive fair use are hereby deemed to be withdrawn. Signed by Chief Judge Leonard T Strand on 2/6/2024. (jag)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF IOWA
EASTERN DIVISION
ALANA SOUZA, et al.,
Plaintiffs,
No. C22-2019-LTS-KEM
vs.
CHARMED LLC, d/b/a Flirts
Gentlemen’s Club,
MEMORANDUM OPINION
AND ORDER ON PLAINTIFFS’
MOTION FOR PARTIAL
SUMMARY JUDGMENT
Defendant.
I.
INTRODUCTION
This case is before me on a motion (Doc. 27) for partial summary judgment filed
by Plaintiffs Alana Souza, Dessie Mitcheson, Emily Sears, Jamillette Gaxiola, Jesse
Golden, Jessica Hinton, Julianne Klaren, Katrina Van Derham, Lina Posada, Megan
Daniels, Melanie Iglesias, Rosa Acosta, Rosie Roff, Sandra Valencia, Tiffany Toth Gray
and Ursula Mayes (Plaintiffs). In support, Plaintiffs filed a brief (Doc. 27-1), a statement
of material facts (Doc. 27-2) and an appendix (Doc. 27-3). Defendant Charmed LLC,
doing business as Flirts Gentlemen’s Club (Flirts), filed a resistance (Doc. 28) and a
supporting brief (Doc. 28-1). 1 Plaintiffs filed a reply (Doc. 29). Oral argument is not
necessary. See Local Rule 7(c).
II.
PROCEDURAL HISTORY
On May 3, 2022, Plaintiffs commenced this action by filing a complaint (Doc. 1)
against Flirts, which operates an establishment in Waterloo, Iowa. Plaintiffs assert eight
1
In some filings, the name of the club is referred to as “Flirt’s” rather than “Flirts.” Based on
various materials included in Plaintiffs’ appendix (Doc. 27-3), it appears that “Flirts” is correct.
As such, and except when this order includes a direct quotation to the contrary, I will refer to
the establishment as “Flirts.”
claims: violations of the Lanham Act (Count I); violation of Plaintiffs’ common law right
of publicity (Count II); violation of Plaintiffs’ common law right of privacy –
appropriation (Count III); violation of Plaintiffs’ common law right of privacy – false
light (Count IV); conversion (Count V); unfair competition (Count VI); negligence
(Count VII); and unjust enrichment (Count VIII). See Doc. 1 at 14-30.
Plaintiffs seek actual, consequential and incidental damages; the amount due,
owing and unpaid to Plaintiffs as representing the fair market value of compensation for
what they otherwise would have received for use of their images and likenesses; treble
and statutory damages; prejudgment interest; disgorgement of profits; a permanent
injunction barring Flirts from using Plaintiffs images, costs and attorney’s fees. Id. at
30-31. In its answer (Doc. 7), Flirts denied many of the allegations set forth in the
complaint and asserted three affirmative defenses: (1) failure to state a claim upon which
relief can be granted, (2) the doctrines of fair use, nominative fair use and/or descriptive
use and (3) innocent infringement. Doc. 7 at 11.
Plaintiffs seek summary judgment on Count II, which alleges a violation of the
common law right to publicity, and Count III, which alleges a violation of the common
law right to privacy by appropriation. Doc. 27 at 1. Plaintiffs also request summary
judgment on Flirts’ affirmative defenses of fair use, nominative fair use, descriptive use
and innocent infringement. Id.
III.
SUMMARY JUDGMENT STANDARDS
Any party may move for summary judgment regarding all or any part of the claims
asserted in a case. Fed. R. Civ. P. 56(a). Summary judgment is appropriate when “the
pleadings, depositions, answers to interrogatories, and admissions on file, together with
affidavits, if any, show that there is no genuine issue of material fact and that the moving
party is entitled to a judgment as a matter of law.” Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986).
2
A material fact is one that “‘might affect the outcome of the suit under the
governing law.’” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Thus,
“the substantive law will identify which facts are material.” Id. Facts that are “critical”
under the substantive law are material, while facts that are “irrelevant or unnecessary”
are not. Id.
An issue of material fact is genuine if it has a real basis in the record, Hartnagel
v. Norman, 953 F.2d 394, 395 (8th Cir. 1992) (citing Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 586-87 (1986)), or when “‘a reasonable jury could
return a verdict for the nonmoving party’ on the question.” Woods v. DaimlerChrysler
Corp., 409 F.3d 984, 990 (8th Cir. 2005) (quoting Anderson, 477 U.S. at 248). Evidence
that only provides “some metaphysical doubt as to the material facts,” Matsushita, 475
U.S. at 586, or evidence that is “merely colorable” or “not significantly probative,”
Anderson, 477 U.S. at 249-50, does not make an issue of material fact genuine.
As such, a genuine issue of material fact requires “sufficient evidence supporting
the claimed factual dispute” so as to “require a jury or judge to resolve the parties'
differing versions of the truth at trial.” Anderson, 477 U.S. at 248-49. The party moving
for entry of summary judgment bears “the initial responsibility of informing the court of
the basis for its motion and identifying those portions of the record which show a lack of
a genuine issue.” Hartnagel, 953 F.2d at 395 (citing Celotex, 477 U.S. at 323). Once
the moving party has met this burden, the nonmoving party must go beyond the pleadings
and by depositions, affidavits, or otherwise, designate specific facts showing that there
is a genuine issue for trial. Mosley v. City of Northwoods, 415 F.3d 908, 910 (8th Cir.
2005). The nonmovant must show an alleged issue of fact is genuine and material as it
relates to the substantive law. If a party fails to make a sufficient showing of an essential
element of a claim or defense with respect to which that party has the burden of proof,
then the opposing party is entitled to judgment as a matter of law. Celotex, 477 U.S. at
322.
3
In determining if a genuine issue of material fact is present, I must view the
evidence in the light most favorable to the nonmoving party. Matsushita, 475 U.S. at
587-88. Further, I must give the nonmoving party the benefit of all reasonable inferences
that can be drawn from the facts. Id. However, “because we view the facts in the light
most favorable to the nonmoving party, we do not weigh the evidence or attempt to
determine the credibility of the witnesses.” Kammueller v. Loomis, Fargo & Co., 383
F.3d 779, 784 (8th Cir. 2004). Instead, “the court’s function is to determine whether a
dispute about a material fact is genuine.” Quick v. Donaldson Co., Inc., 90 F.3d 1372,
1376-77 (8th Cir. 1996).
IV.
RELEVANT FACTS
Plaintiffs filed a statement of material facts (Doc. 27-2) setting forth the alleged
facts they rely on to seek summary judgment as to Counts II and III. Flirts did not file a
response to Plaintiffs’ statement of material facts, nor did it file a statement of additional
material facts. See Docs. 28, 28-1. Therefore, pursuant to Local Rule 56(b), all facts
set forth in Plaintiffs’ statement of material facts are deemed admitted for purposes of
their motion for summary judgment. See LR 56(b) (“The failure to respond to an
individual statement of material fact, with appropriate appendix citations, may constitute
an admission of that fact.”). Those facts are summarized below.
In October 2016, Flirts uploaded a post to its online Facebook page. Doc. 27-3
at 54. The post included a photo of plaintiff Jesse Golden, a professional model, who
was depicted in the post as promoting a “Halloween costume party” at the club. Id. at
53. In addition to this post, Flirts utilized images of each of the other fifteen plaintiffs,
also professional models, in various marketing posts to its Facebook page without their
consent. Docs. 27-2 at 2, ¶¶ 5-9. Specifically, Plaintiffs identify numerous Facebook
and other online posts by Flirts utilizing their images. Id. at 2, ¶ 7.
None of the Plaintiffs worked for Flirts and none were paid by Flirts for its use of
their likenesses and images. Id. at 2, ¶ 8. Each Plaintiff received “unwanted fame and
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reco[g]nition in the strip club industry from unauthorized use of her image by strip
clubs.” Id. at 1, ¶3. Flirts’ posts of Plaintiffs’ images without their consent diminishes
the “complete control” Plaintiffs exercise over their work, for which they receive
“significant compensation for use” of their images. Id. at 2, ¶ 4.
Flirts’ “ads appropriated each Plaintiffs’ commercialized beautiful and attractive
likeness.” Id. at 2, ¶ 6. In light of the nature of the advertising for a “Gentlemen’s Club
where exotic dancers perform live and partially nude for customers,” Plaintiffs “would
not have agreed to appear in a Flirts ad, [and] each would charge a license fee for use of
her image.” Id. at 2, ¶¶ 9, 10. Flirts utilized Plaintiffs’ images to promote its business
without seeking Plaintiffs’ consent, attempting to get a license or paying Plaintiffs for use
of their images. Doc. 27-2 at 3-4, ¶¶ 18-20. Flirts took Plaintiffs’ advertising ideas and
passed them off as Flirts’ own in order to promote its business. See, e.g., Doc. 27-3 at
54, ¶ 25.
Mirzet Dizdarevic, Flirts’ manager responsible for marketing during the time
alleged, testified that he procured the images of Plaintiffs for free by using generalized
Google search terms, such as “free sexy girl images for a flyer.” Docs. 27-3 at 190-91,
28-1 at 4. After obtaining the images from Google, Dizdarevic used an app to design a
flyer before posting it to Flirts’ Facebook page. Doc. 27-3 at 190. Dizdarevic also
testified that in addition to Flirts’ posts on Facebook, Instagram and its own website,
some of the flyers were also printed into hard copy. Id. at 192.
V.
A.
ANALYSIS
Common Law Rights of Publicity and Privacy by Appropriation
Plaintiffs argue that they are entitled to partial summary judgment on Count II,
which alleges a violation of the common law right to publicity, and Count III, which
alleges a violation of the common law right to privacy by appropriation. They assert that
Flirts appropriated their likenesses, including their commercial value, “by publishing
advertisements on social media that used each Plaintiff’s picture to commercially promote
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[Flirts’] strip club and increase attendance.” Doc. 27-1 at 9. Plaintiffs argue that there
is no evidence that Flirts’ use of their images were “incidental” to its commercial purpose
but rather these images were used “precisely because of their sex appeal and value of
[the] same to a business like a strip club.” Id. Thus, they assert that there are no genuine
issues of material fact precluding summary judgment on these claims. Id.
Flirts makes four arguments in support of its contention that there are genuine
disputes of material fact concerning Counts II and III. First, Plaintiffs’ names do not
appear in the advertisements. Doc. 28-1 at 4. Second, the advertisements do not contain
statements indicating that Plaintiffs will be performing at Flirts. Id. Third, there are no
statements in the advertisements indicating that the individuals who appear in them
endorse Flirts. Id. Fourth, the images of Plaintiffs were obtained for free through an
online web search. Id.
I will address Count III, violation of the common law right to privacy by
appropriation, first.
1.
Right of Privacy – Appropriation
The Iowa Supreme Court has long recognized the right of privacy as characterized
by the Restatement (Second) of Torts. See Winegard v. Larsen, 260 N.W.2d 816, 818
(Iowa 1977) (citing Bremmer v. Journal Tribune Pub. Co., 76 N.W.2d 762, 822 (Iowa
1956)); Stessman v. American Black Hawk Broad. Co., 416 N.W.2d 685, 686 (Iowa
1987). Within this right of privacy, the Court has identified four types of invasions: (1)
unreasonable intrusion upon the seclusion of another; (2) appropriation of the other’s
name or likeness; (3) unreasonable publicity given to the other’s private life; and (4)
publicity that unreasonably places the other in a false light. Koeppel v. Speirs, 808
N.W.2d 177, 181 (Iowa 2011) (citing Restatement (Second) of Torts § 625A(2) (1977)).
The Court has addressed the three other subsections of the invasion of privacy
tort, but it has not decided a case involving the category of appropriation. See Estate of
Bisignano v. Exile Brewing Co., No. 22-cv-00121, 2023 WL 7167889, at *11-12 (S.D.
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Iowa Sept. 26, 2023); see also Winegard, 260 N.W.2d at 822-23 (addressing the
standards for each category of invasion of privacy claims under the Restatement except
the category of appropriation finding it “plainly inapplicable”). Although the Iowa
Supreme Court has not addressed an appropriation claim, this court has concluded that
the Iowa Supreme Court would nonetheless recognize its validity. See, e.g., Griner v.
King, 568 F. Supp. 3d 978, 995-96 (N.D. Iowa 2021) (Williams, J.) (applying the
Restatement analysis to plaintiffs’ claim of invasion of privacy by appropriation); SharpRichardson v. Boyds Collection, Ltd., No. C 96-0344, 1999 WL 33656875, at *14 (N.D.
Iowa Sept. 30, 1999) (finding Plaintiff’s invasion of privacy by appropriation claim to be
without merit).
In Griner, a case in which a candidate for public office used a photograph of an
individual in a political advertisement without consent, Judge Williams described the
“appropriation” category of the invasion of privacy tort as follows:
The Restatement of Torts elaborates on the “appropriation” form of
“invasion of privacy.” Section 652A of the Restatement of Torts states that
the “right of privacy is invaded by. . . (b) appropriation of the other’s name
or likeness, as stated in § 652C.” RESTATEMENT (SECOND) OF
TORTS § 652A (AM. L. INST. 1977). Section 652C in turn states that
“[o]ne who appropriates to his own use or benefit the name or likeness of
another is subject to liability to the other for invasion of his privacy.” Id.
at [§] 652C. The common form of this invasion is the appropriation and
use of a plaintiff’s name or likeness to advertise a defendant’s business or
product, or for some “similar commercial purpose.” Id. [§] 652C, cmt. b.
. . . The tort applies only when the name or likeness is published to
appropriate “to the defendant’s benefit the commercial or other values
associated with the name or the likeness[.]” Id. at § 652C cmt. d. It does
not apply to an “incidental use” of a plaintiff’s name or likeness, such as a
“mere mention” of his name or likeness, a reference to the plaintiff’s name
or likeness while legitimately discussing “his public activities,” or a
publication of his name or likeness for a purpose “other than taking
advantage of the reputation, prestige, or other values associated with him.”
Id.
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Griner, 568 F. Supp. 3d at 996. Judge Williams concluded that the plaintiffs had
sufficiently alleged a claim of appropriation to withstand a motion to dismiss. Id. at 997.
Here, of course, the issue is whether Plaintiffs have established an invasion of privacy
by appropriation as a matter of law.
Liability under § 625C of the Restatement requires an appropriation of a plaintiff’s
name or likeness, but it is not appropriation “when it is published for purposes other than
taking advantage of his reputation, prestige, or other value associated with him, for
purposes of publicity.” Restatement (Second) of Torts § 625C, cmt. d. “The fact that
the defendant is engaged in the business of publication, for example of a newspaper, out
of which he makes or seeks to make a profit, is not enough to make the incidental
publication a commercial use of the name or likeness.” Id. Here, Plaintiffs cite two
cases from the District of Arizona to support their argument that Flirts “appropriated
each Plaintiff’s likeness, including the commercial value of their sexy professional
modeling Image. . . to commercially promote Defendant’s strip club and increase
attendance.” Doc. 27-1 at 9 (citing Gray v. LG&M Holdings, Inc., No. CV-18-02543,
2020 WL 6200165, at *4 (D. Ariz. Sept. 23, 2020); Longoria v. Kodiak Concepts, LLC,
527 F. Supp. 3d 1085, 1099 (D. Ariz. 2021)). In both Gray and Longoria, the court
granted the plaintiffs’ motions for summary judgment, finding no issues of material fact
under the same fact pattern present in this case. See Gray, 2020 WL 6200165, at *4;
Longoria, 527 F. Supp. 3d at 1099. The District of Arizona reached the same conclusion
in Skinner v. Tuscan Inc., No. CV-18-00319, 2020 WL 5946898, at *1 n.1, *5 (D. Ariz.
Oct. 7, 2020) (collecting cases).
However, in two other cases from the District of Arizona, the court denied
plaintiffs’ motions for summary judgment on appropriation claims under the same fact
patterns. See Geiger v. Creative Impact, Inc., No. CV-18-01443, 2020 WL 3545560, at
*8 (D. Ariz. June 30, 2020) (“Plaintiffs have not shown that the undisputed facts establish
a prima facie case for appropriation.”); Sampedro v. ODR Mgmt. Grp. LLC, No. CV8
18-04811, 2021 WL 2144811, at *2 (D. Ariz. May 26, 2021) (denying Plaintiffs’ motion
for summary judgment). 2 These differing outcomes require closer examination.
In Gray and Longoria, professional models sued a strip club operator and alleged,
among other claims, invasion of privacy by appropriation and violations of the right to
publicity. Gray, 2020 WL 6200165, at *1; Longoria, 527 F. Supp. 3d at 1093. In Gray,
the court applied a four-factor test to determine whether the plaintiffs established a claim
of misappropriation. The factors required that they demonstrate “(1) the defendant’s use
of plaintiff’s identity; (2) the appropriation of plaintiff’s name or likeness to the
defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting
injury.” Gray, 2020 WL 6200165, at *3 (citing Pooley v. National Hole-in One Ass’n,
89 F. Supp. 2d 1108, 1110 (D. Ariz. 2000) (relying on the Restatement (Second) of Torts
§ 625C and the Restatement (Third) of Unfair Competition § 46)). The court found that
the defendant was advantaged, regardless of the omissions of the plaintiffs’ names from
the advertisements, and that it was “beyond controversy” that it “sought to use Plaintiffs’
images to sell its strip club.” Gray, 2020 WL 6200165, at *4. The court concluded that
the plaintiffs had demonstrated an absence of genuine issues of material fact and were
entitled to summary judgment. Id. Similarly, in Longoria, the court found that the
plaintiffs were entitled to summary judgment because the defendant “brought forth no
evidence suggesting Plaintiff’s images were publicly available to Defendant for licensing
and use.” Longoria, 527 F. Supp. 3d at 1099 (internal quotations omitted) (citing Gray,
2020 WL 6200165, at *4).
By contrast, in Geiger and Sampedro, the court considered the same factual pattern
but held that the plaintiffs in those cases were not entitled to summary judgment. In
Geiger, the court found three ways in which the plaintiffs had not met their burden. First,
they did not establish “beyond controversy” that they were “reasonably identifiable from
2
The five District of Arizona decisions cited herein were decided by five different United States
District Judges.
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the photograph or other depiction[s];” rather, “[w]hether the defendant’s use of a
plaintiff’s image identifies the plaintiff is a question of fact” that “must be made by the
trier of fact.” Geiger, 2020 WL 3545560, at *8. This determination included analyzing
the “nature and extent of identifying characteristics used by the defendant, the defendant’s
intent, the fame of the plaintiff, evidence of actual identification made by third persons,
and surveys or other evidence indicating perceptions,” for the trier of fact. Id.
Second, the court found that the plaintiffs could not establish damages on summary
judgment, as the factors for damages must be established by weighing the intent of the
parties “and a party’s intent must typically be determined by the finder of fact.” Id.
Third, the court found that when the defendant did not seek the express consent of the
plaintiffs for use of their images, but obtained the images for free online, that “the
question of apparent consent must be determined by the finder of fact.” Id. at *5, *9
(citing Restatement (Second) of Torts § 892). Ultimately, the court found “triable issues
of fact as to the elements of Plaintiffs’ appropriation claims.” Id. at * 9.
In Sampedro, the court similarly found triable issues of fact and denied the
plaintiffs’ motion for summary judgment on their appropriation claims. Sampedro, 2021
WL 2144811, at *2. The court found that it was not “beyond controversy” that the
defendants’ use of the plaintiffs’ images identified the plaintiffs and that the question of
appropriation on that issue must be made by the trier of fact. Id.
Here, Flirts articulates two lines of argument that create a genuine dispute of
material fact when construing the evidence in the light most favorable to Flirts. First, it
points out that none of the images “name the individual,” “state that the plaintiffs will be
performing or appearing at Flirt’s Gentlemen’s Club,” nor “state that the plaintiff is
endorsing Flirt’s.” Doc. 28-1 at 4. As held in Geiger and Sampedro, “whether the
defendant’s use of the plaintiff’s image identifies the plaintiff is a question of fact.”
Sampedro, 2021 WL 2144811, at *2. While Plaintiffs’ consumer survey analysis (Doc.
27-3 at 241-42) found that “a majority of respondents” believed Plaintiffs were
associated, affiliated or agreed to sponsor Flirts, the study found that “in most cases, no
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more than one-quarter of the respondents across the four cells said they recognized the
women in the ads, while at least two-thirds of all respondents across the four groups said
they did not recognize any of the models in the Flirts Gentlemen’s Club ad they saw.”
Doc. 27-3 at 243.
I find that there is a genuine dispute of material fact as to whether
the use of the Plaintiffs’ images resulted in the identification of the Plaintiffs. This
question is reserved for the trier of fact.
Second, Flirts argues the photos in the advertisements “are readily available on
the internet when a Google search is performed.” Doc. 28-1 at 4. Dizdarevic’s testimony
demonstrates that this is how he obtained Plaintiffs’ images in this case. Doc. 27-3 at
190. Plaintiffs do not dispute that this is how the images were obtained, but argue that
it “simply makes no difference” because “nowhere does Defendant claim running a
Google search and using the results creates a license to commercially use a photograph.”
Doc. 29 at 3. However, as the court in Geiger explained, even though the Plaintiffs did
not provide express consent for Flirts’ use of their images, the issue of whether there was
apparent consent is a question of fact that must be determined by the trier of fact. Geiger,
2020 WL 3545560, at *9 (citing Restatement (Second) of Torts § 892).
Because there are triable issues of fact, Plaintiffs’ motion for summary judgment
on their invasion of privacy by appropriation claim (Count III) will be denied.
2.
Right to Publicity
The Iowa Supreme Court has not specifically recognized the common law tort of
right to publicity. See Sharp-Richardson, 1999 WL 33656875, at *15 (noting Iowa has
not recognized the “right to publicity”); Estate of Bisignano, 2023 WL 7167889, at *12
(finding “the Iowa Supreme Court would recognize the right of publicity if presented
with the question”). However, this court has previously concluded that the Iowa Supreme
Court would allow a right to publicity claim to proceed. Sharp-Richardson, 1999 WL
33656875, at *15 (citing Anderson v. Low Rent Housing Comm’n, 304 N.W.2d 239, 249
(Iowa 1981)); see also Ventura v. Titan Sports, Inc., 65 F.3d 725, 730 (8th Cir. 1995)
11
(finding Minnesota would recognize the tort of violation of publicity rights even though
it does not recognize the “fourfold tort of invasion of privacy”).
In Estate of Bisignano, 2023 WL 7167889, at *12, the Southern District of Iowa
addressed the viability of a right of publicity claim in Iowa. In that case, Judge Locher
explained that the right of publicity is recognized by the Restatement (Third) of Unfair
Competition, which the Iowa Supreme Court has favorably cited in previous decisions.
See id. (citing Cmty. State Bank, Nat’l Ass’n v. Cmty. State Bank, 758 N.W.2d 520, 52527 (Iowa 2008) (relying on the Restatement to assess a trademark infringement claim);
Cemen Tech, Inc. v. Three D Industries, L.L.C., 753 N.W.2d 1, 7 (Iowa 2008) (relying
on the Restatement to assess a claim of misappropriation of trade secrets); Revere
Transducers, Inc. v. Deere & Co., 595 N.W.2d 751, 761 (Iowa 1999) (relying on the
Restatement to assess the enforceability of an employment agreement containing a nondisclosure provision). The right of publicity, found in § 46 of the Restatement, is the
historical descendent of the right of privacy.
See Restatement (Third) of Unfair
competition, § 46 cmt. b (Am. L. Inst. 1995). Judge Locher found that right of publicity
claims are viable under Iowa common law because “the right of publicity is a species of
the right to privacy, which the Iowa Supreme Court has protected for nearly seventy
years.” Estate of Bisignano, 2023 WL 7167889, at *13 (citing Bremmer, 76 N.W.2d at
764). I agree, and predict that the Iowa Supreme Court would recognize the common
law tort of the right to publicity.
As for the elements of that tort, the parties suggest that the claims of invasion of
privacy by appropriation and the right of publicity effectively share the same elements.
See Docs. 27-1 at 7, 28 at 2, ¶ 3. However, the distinction between these torts may not
be incidental. In Ventura, while addressing Minnesota law, the Eighth Circuit Court of
Appeals noted that “the right of publicity differs substantially from the right to privacy.”
Ventura, 65 F.3d at 730 (8th Cir. 1995). The court stated that the “policy underlying
the tort of invasion of privacy is the protection of the privacy and solicitude of private
person[s] from the mental distress that accompanies undesired publicity.” Id. at 730. By
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contrast, the right to publicity “protects the ability of public person[s] to control the types
of publicity they receive,” and “protects the pecuniary, not emotional, interests.” Id.
The Restatement itself recognizes “[t]he distinction between the publicity and privacy
actions.” Restatement (Third) of Unfair Competition § 46, cmt. b.
“An action based on the right of publicity is a state-law claim.” C.B.C. Distrib.
Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818, 822 (8th
Cir. 2007) (citing Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 566 (1977)).
Although Iowa has not specifically recognized the elements of such claim, this court has
found that a plaintiff must establish the following: “(1) the defendant appropriated the
plaintiff’s name or likeness for the value associated with it, and not in an incidental
manner or for a newsworthy purpose; (2) the plaintiff can be identified from the
publication; and (3) there was some advantage or benefit to the defendant.” SharpRichardson, 1999 WL 33656875, at *15 (denying defendants’ motion for summary
judgment on plaintiffs’ right to publicity claim). Relying on the Restatement of Unfair
Competition, the Supreme Court of Missouri held “[i]n a right of publicity action, the
plaintiff must prove the same elements as in a misappropriation suit, with the minor
exception that the plaintiff must prove that the defendant used the name to obtain a
commercial advantage.” Doe v. TCI Cablevision, 110 S.W.3d 363, 369 (Mo. 2003) (en
banc), cert. denied, 540 U.S. 1106 (2004); see also C.B.C. Distrib. Mktg., 505 F.3d at
822 (favorably citing Missouri’s interpretation of the Restatement and summarizing the
elements as: (1) “defendant used plaintiff’s name as a symbol of his identity, (2) without
consent (3) and with the intent to obtain a commercial advantage”).
Here, viewing the record in the light most favorable to Flirts, and for the same
reasons that apply to Count III, there are issues of material fact as to Plaintiffs’ right to
publicity claim. Among other things, there is a genuine issue as to whether Flirts’ use
of the Plaintiffs’ images resulted in the identification of the Plaintiffs and as to whether
apparent consent was given. Plaintiffs’ motion for summary judgment as to their claims
under the right to publicity (Count II) will be denied.
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B.
Affirmative Defenses
Plaintiffs seek summary judgment on Flirts’ affirmative defenses of (1) fair use,
nominative fair use and/or descriptive fair use and (2) innocent infringement. Doc. 27
at 1. Plaintiffs assert these are not affirmative defenses to any of Plaintiffs’ claims and,
in any event, are not supported by the record. Id. In response, Flirts has elected to
withdraw the first set of affirmative defenses (fair use, nominative fair use and/or
descriptive use). Doc. 28 at 3. As such, those defenses are no longer at issue.
Flirts resists Plaintiffs’ motion for summary judgment on the affirmative defense
of innocent infringement. Id. It asserts that such a defense “may apply to the issues of
damages.” Id. A court must act with caution in granting summary judgment. Anderson,
477 U.S. at 255. Generally, a court addresses affirmative defenses only after finding
that the plaintiff established the required element of the relevant claim. Jacobsen v.
Rensink, No. C96-4074, 1998 WL 35240791, at *5 (N.D. Iowa July 7, 1998) (reaching
defendant’s affirmative defense only after finding that plaintiff “established the two
required elements of his claim”); Teter v. Glass Onion, Inc., 723 F. Supp. 2d 1138, 1146
(W.D. Mo. 2010) (reaching defendant’s affirmative defenses only after finding plaintiff
and copyright owner “established a claim for copyright infringement”).
Because there are issues of material fact precluding summary judgment for the
Plaintiffs as to Counts II and III, I decline to reach Plaintiffs’ arguments for summary
judgment as to Flirts’ affirmative defense of innocent infringement. See Griner v. King,
No. 21-CV-4024, 2022 WL 4281600, at *7-8 (N.D. Iowa Sept. 15, 2022) (distinguishing
Spann v. Lombardi, 960 F.3d 1085, 1088 (8th Cir. 2020) and CRST Expedited, Inc. v.
JB Hunt Transp., Inc., No. 17-CV-26, 2018 WL 2768874, at *8 (N.D. Iowa June 8,
2018)); see also Cynergy Ergonomics, Inc. v. Ergonomic Partners, Inc., No. 4:08-CV243, 2008 WL 2817106, at *6 (E.D. Mo. July 21, 2008) (declining to grant Plaintiff’s
motion to strike innocent infringement affirmative defense in trademark infringement,
Lanham Act and unfair competition claim finding the defense “relevant to the question
14
of whether there is a likelihood of confusion between the marks”). Plaintiffs’ motion for
summary judgment on this issue will therefore be denied.
VI.
CONCLUSION
For the reasons set forth herein:
1.
Plaintiffs’ motion (Doc. 27) for partial summary judgment is denied in its
entirety.
2.
Defendants’ affirmative defenses of fair use, nominative fair use and
descriptive fair use (Doc. 7) are hereby deemed to be withdrawn.
IT IS SO ORDERED.
DATED this 6th day of February, 2024.
__________________________
Leonard T. Strand, Chief Judge
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